e-Commerce Docket Sheet

A copyright holder who forms a good faith belief of an alleged infringement is not required under the Digital Millennium Copyright Act (DMCA) to conduct an investigation to establish actual infringement prior to sending a 'takedown' notice to an Internet Service Provider (ISP). Rossi v. Motion Picture Ass'n of America, Inc., Civ. No. 02-00239BMK (D. Haw. Apr. 29, 2003). Plaintiff's Web site, 'internetmovies.com,' was shut down by its ISP in response to the defendant's DMCA notice and takedown request. Dismissing various claims against the defendants based on this notice, the magistrate judge held that the defendants' actions were justified and reasonable, as the DMCA requires only a good faith belief of an alleged or claimed infringement, and the defendants had 'more than a sufficient basis' to form this belief.

An ISP is shielded under '230 of the Communications Decency Act (CDA) from liability that might otherwise arise based on third-party harassment in a chat room. Noah v. AOL Time Warner, Inc., Civ. No. 02-1316-A (E.D. Va. May 15, 2003). The court dismissed the plaintiff's claim against the ISP for damages he allegedly sustained in a chat room. The court held that the ISP was immune from a civil rights claim under '230 of the CDA because the claim treated the ISP as a 'publisher' of the harassing statements. In addition, the court found that even if '230 did not apply, the claim failed because the chat room was not an actual physical facility and thus did not qualify as a 'place of public accommodation' under Title II of the Civil Rights Act.

An 'unreasonably pervasive' use of a competitor's trademark on a Web site is not protected by the nominative fair use defense. Horphag Research Ltd v. Pellegrini, No. 01-56733 (9th Cir. May 9, 2003). The Circuit Court found that the defendant likely met the first prong of the three-part nominative fair use test because the competitor's mark was being used to make a comparison with the competitor's product, and the product could only be identified by using the mark. The court concluded, however, that the defendant failed the remainder of the test because the competitor's mark was used extensively in the Web site text and metatags, exceeding 'any measure of reasonable necessity.'

A European casino's advertising in U.S. markets, coupled with evidence that U.S. citizens traveled to and gambled in the casino's facilities, constitutes the use of its marks 'in commerce' within the meaning of the Lanham Act. International Bancorp, LLC v. Societe Des Bains De Mer et Du Cercle des Etrangers a Monaco, No. 02-1364 (4th Cir. May 19, 2003). The Circuit Court rejected the argument that the casino did not have a protectible interest in the claimed marks that would entitle it to relief under the anticybersquatting provisions of the Lanham Act because its use of its marks was in foreign commerce. The court also concluded that the District Court's order transferring 43 domain names to the casino was not an abuse of discretion.

The addition of the word 'sucks' to a trademark is not sufficient to prevent the resulting domain name from being confusingly similar to the trademark. The Royal Bank of Scotland Group plc v. Lopez, Case No. D2003-0166 (WIPO May 9, 2003). The WIPO Panelist transferred the domain name 'natwestbanksucks.com' to the assignees of the 'natwest' trademarks, finding that although there were divergent views about whether 'sucks' domain names avoided being confusingly similar, the majority of opinions on this issue sided with the trademark owners. Among the reasons cited by the Panelist were the fact that not all Internet users were English-speakers or familiar with the term 'sucks,' and the risk that search engines would retrieve 'sucks' domains in response to searches for the associated trademark.

A UDRP complainant that establishes rights in a trademarked prefix in connection with one industry will not necessarily be able to establish rights in domain names that incorporate the prefix in connection with another industry. Citigroup, Inc. v. Parvin, No. D2002-0969 (WIPO May 12, 2003). A split WIPO Panel ordered transfer of 'citifinance.com' to the complainant, a well-known financial services company that owned many marks using the prefix 'Citi', but refused to transfer several domain names incorporating the string 'cititravel'. The majority found that the public would undoubtedly associate the complainant with use of the prefix in connection with the financial services industry, but this would not necessarily be the case with respect to the 'cititravel' domain names and the travel industry.

Distribution of videotapes containing material from a public domain television series, without giving credit to the original producer of the series, is not actionable as trademark infringement under the Lanham Act. Dastar Corp. v. Twentieth Century Fox Film Corp., et al., No. 02-428 (U.S. June 2, 2003). The Court found that Section 43(a) of the Lanham Act, which protects against 'a false designation of origin,' refers to 'the producer of the tangible goods that are offered for sale, and not the author of any idea, concept, or communication embodied in those goods.'

A numerical ranking of the relative significance of a Web site as it corresponds to a search query is a form of protected speech that cannot form the basis for tort liability. Search King, Inc. v. Google Technology, Inc., No. CIV-02-1457-M (W.D. Okla. May 27, 2003). The court dismissed a tortious interference with contractual relations action brought by a party claiming that search engine Google intentionally manipulated its 'PageRank' service results ' a numerical ranking of a Web site's significance in relation to a search query. The court said that the page ranking was a constitutionally protected opinion as 'there is no conceivable way to prove that the relative significance assigned to a given web site is false.' That being the case, even a manual and intentional manipulation could not give rise to the plaintiff's claim under state law.

An online data collection service does not have implied consent from its pharmaceutical company clients to intercept communications between the clients and Internet users. In re Pharmatrak, Inc. Privacy Litigation, No. 02-2138 (1st Cir. May 9, 2003). The First Circuit reinstated the users' class action claim under the Electronic Communications Privacy Act (ECPA) against Pharmatrak, a company that provided its 'NETcompare' service to several pharmaceutical companies to compare traffic and usage on their Web sites. The court held that the lower court misapplied the 'consent exception' to the ECPA because, in fact, the pharmaceutical companies explicitly conditioned their purchase of NETcompare on the fact that personally identifiable information would not be collected. The court also held that Pharmatrak's acquisition of user information was an 'interception' under the ECPA, and remanded for further proceedings to determine whether the interception was intentional.

When electronic data is sought during discovery, a court should maintain the presumption that the responding party pays for the costs. Zubulake v. UBS Warburg LLC, No. 02 Civ. 1243 (S.D.N.Y. May 13, 2003). An employment discrimination plaintiff requested that the defendant produce various e-mails existing on backup tapes, and that defendant pay the recovery costs, estimated at $175,000. In addressing this request, the court modified the prevailing 'gold standard for courts resolving electronic discovery disputes,' and fashioned a new, seven-factor test for shifting costs to the requesting party ' a test that is applied only when the electronic data is relatively inaccessible, such as on backup tapes. Accordingly, the court ordered the defendant to search for and recover much of the evidence sought by the plaintiff.

Section 227 of the Federal Telephone Consumer Protection Act of 1991 (TCPA), which prohibits the sending of unsolicited commercial advertisements to a 'telephone facsimile machine,' does not apply to the sending of unsolicited commercial e-mail. Aronson v. Bright-Teeth Now, LLC, No. 1179 WDA 2002 (Pa. Super. Ct. May 8, 2003). The plaintiff argued that a computer falls within the statutory definition of a 'telephone facsimile machine' because it is connected to a telephone line and to a computer printer and thus can receive text or images over a telephone line and transcribe them onto paper. Upholding the ruling of a lower court, the Superior Court held that the 'clear definition' of a 'telephone facsimile machine' set forth in the TCPA does not include a computer.

A nonresident defendant's Web site through which users can browse a music catalog and then complete their purchases on a linked third-party site supports a finding that defendant purposefully availed itself of the forum state. Bridgeport Music, Inc. v. Still N the Water Publishing, 327 F.3d 472 (6th Cir. May 5, 2003). The Sixth Circuit reversed and remanded the district court's determination that the Web site operator did not purposefully avail itself of the forum state, citing evidence indicating Internet sales of at least two of the allegedly infringing albums, which was sufficient to adduce a prima facie finding of purposeful availment.

Docket Sheet was written by Julian S. Millstein, Edward A. Pisacreta and Jeffrey D. Neuburger, partners in the New York office of Brown Raysman Millstein Felder & Steiner LLP.

No Investigation Required Prior to Sending DMCA Takedown Notice